EXHIBIT 10.27
LICENSE AGREEMENT
THIS LICENSE AGREEMENT ("Agreement") is entered into as of February 19,
2004 (the "Effective Date"), by and between Integrex Inc., a Washington
corporation, located at 00000 00xx Xxxxx XX, Xxxxxxx, Xxxxxxxxxx ("Licensor"),
and Three Five Systems Inc., a Delaware corporation, located at 0000 Xxxxx
Xxxxxx Xxxxx, Xxxxx, XX 00000 ("Licensee"). Licensor and Licensee are each
sometimes referred to herein as a "Party" and together as the "Parties."
BACKGROUND
A. Licensor has rights in certain intellectual property and
customers that it wishes to license to Licensee so that Licensee may
manufacture, sell, market, and distribute products to those customers.
B. Licensee desires a worldwide perpetual license as described in
this Agreement.
AGREEMENT
For good and valuable consideration, the adequacy of which is hereby
acknowledged, the Parties agree as follows:
1.0 Definitions.
1.1 "ANCILLARY AGREEMENTS" means, collectively, the Asset Purchase
Agreement, the Bailment Agreement and the Manufacturing Services Agreement as
well as any other document or instrument reasonably requested by Licensor and/or
Licensee that is necessary to confirm the license of the assets to Licensee, and
Licensee's rights thereof, on and after the Effective Date.
1.2 "ASSET PURCHASE AGREEMENT" means the agreement between
Licensor and Licensee of even date herewith pursuant to which Licensor sells and
delivers certain inventory, intangible property, and equipment to Licensee.
1.3 "ASSETS" means the Inventory, Intangible Property, and
Equipment (as defined in the Asset Purchase Agreement) to be sold by Licensor to
Licensee under the Asset Purchase Agreement.
1.4 "BAILMENT AGREEMENT" means the Bailment Agreement of even date
herewith between Licensor, as bailee, and Licensee, as xxxxxx.
1.5 "BOOKS AND RECORDS" means all books, records, books of
account, financial records, financial statements, files, data and papers,
whether in hard copy, computer format or otherwise, used or held for use by
Licensor or any of its subsidiaries in connection with or related to the
Licensed Property.
1.6 "CUSTOMERS" means Licensor's past, current, or future
customers, or successors thereto by merger or asset purchase or otherwise,
including those Customers listed under Schedule 1.1 made part hereof.
1.7 "FIRST CLOSING DATE" has the meaning given that term in the
Asset Purchase Agreement.
1.8 "LAW" means any federal, state, local or foreign law, statute,
ordinance, rule, regulation, code, license, permit, authorization, approval,
consent, legal doctrine, order, judgment, decree, award, injunction,
requirement, judicial or regulatory agency interpretation, policy or guidance or
agreement with any governmental authority having jurisdiction over the
transactions contemplated by this Agreement.
1.9 "LICENSE" means the License granted by Licensor to Licensee
under this Agreement.
1.10 "LICENSED PROPERTY" means any and all customer lists, sales
leads, purchase orders, worldwide sales, distribution and manufacturing rights,
and confidential information now owned or licensed by or hereafter acquired or
licensed by, Licensor and that are necessary for or useful in the use or sale of
all of the Products.
1.11 "NET SALES" means the list selling price on any Purchase Order
less any sales discounts reflected on the face of such Purchase Order.
1.12 "PRODUCT" or "PRODUCTS" means all products formerly,
currently, or in the future manufactured for Customers.
1.13 "PURCHASE ORDERS" means all Licensor Product Purchase Orders
(including Purchase Order backlog) placed by Customers with either Licensor
and/or Licensee, including those Purchase Orders listed under Schedule 1.2 made
part hereof.
1.14 "PURCHASE ORDER LOSS" means (a) a purchase order not
transferred to Licensee but licensed by Licensee and/or (b) remit to payment
designation located on a purchase order not listing or designating Licensee as
payee for which Licensee does not receive the amount paid to Licensor.
1.15 "SECOND CLOSING DATE" has the meaning given that term in the
in the Asset Purchase Agreement.
1.16 "TERRITORY" means the world.
1.17 "MANUFACTURING SERVICES AGREEMENT" means the agreement between
Licensor and Licensee of even date herewith pursuant to which Licensor
manufactures and delivers certain Products to Licensee.
2.0 PROPERTY LICENSE GRANT. Licensor, to the fullest extent permitted under
the law, hereby grants to Licensee and Licensee hereby accepts an exclusive,
perpetual license within the Territory to the Licensed Property and all Books
and Records to manufacture, market, distribute, sell and offer to sell Products
in all fields of use.
3.0 LICENSE FEE. In consideration for the License, Licensee shall pay
Licensor a license fee (the "License Fee") for Products sold to Customers listed
on Schedule 1.1 payable as follows:
3.1 Licensee shall pay Licensor an amount equal to ten percent
(10%) of the Net Sales derived by Licensee during a 15 month period beginning
April 1, 2004 and ending June 30, 2005 from all Customers except Net Sales to
SNC/Inter-4.
3.2 Licensee shall pay Licensor an amount equal to twelve percent
(12%) of the Net Sales derived by Licensee during a 24 month period beginning
July 1, 2004 and ending June 30, 2006 from Net Sales to SNC/Inter-4.
3.3 All non-refundable payments described in Section 4.1 and 4.2
below shall constitute a credit against the first and all succeeding License
fees described in Sections 3.1 and 3.2 above, until fully utilized.
3.4 The License Fee shall accrue on the date the corresponding
Products are shipped to the Customer. Licensee shall not manipulate shipping
dates in an effort to deprive Licensor of a License Fee to which it would
otherwise be entitled. The License Fee shall be payable within 30 days after
receipt by Licensee of payment from Customers of the Products with respect to
which the License Fee is payable. Unless Licensor and Licensee otherwise agree,
the License Fee shall be paid monthly on the 25th day of the month following the
month in which payment is received from Customer. Licensee shall make all
reasonable attempts to collect amounts owed by the Customers.
3.5 In the event that Licensor receives any monies or checks from
Customers for Products that it ships after the First Closing Date, it will
immediately notify Licensee and remit (or in the case of a check, endorse) these
checks or monies over to Licensee unless Licensee notifies Licensor in writing
that Licensee has elected to set off such amounts against the License Fee.
4.0 NONREFUNDABLE, ADVANCE LICENSE FEE; LICENSE TRANSFER FEE.
4.1 At the consummation of the transactions to occur on the First
Closing Date, Licensee shall pay Licensor a nonrefundable, prepaid license fee
equal to sixteen percent (16%) of the Net Sales reflected on all outstanding
valid written Purchase Orders issued by Customers in the ordinary course of
business ("Original Orders"). This fee shall cover, among other things, costs
necessary to transfer the Licensed Property to Licensee.
4.2 Forty-five days after the First Closing Date, Licensee shall
pay Licensor a second amount equal to sixteen percent (16%) of the Net Sales
reflected on all valid written Purchase Orders issued by Customers in the
ordinary course of business and received by Licensee from the date of the First
Closing Date until the forty-fifth day after the First Closing Date (not
including the Original Orders), less any Original Orders which have been
cancelled.
4.3 Licensee shall pay Licensor a nonrefundable fee in the amount
of $387,000 for transition of the License to be provided by Licensor to Licensee
in connection with the transactions to be consummated under this Agreement and
the Ancillary Agreements. Of this amount, $129,000 will be used by Licensor as
retention payments for Licensor's current employees.
4.4 The total fees owed by Licensor under Section 4.3 above, shall
be paid as follows:
(i) $260,000 to be paid by Licensee as of the First
Closing Date.
(ii) The balance to be paid by Licensee as of the Second
Closing Date.
5.0 SUBLICENSES . Licensee shall have the right, at any time and without
notice to or consent of Licensor, to sublicense third parties to manufacture,
sell, distribute or market the Products, provided such Sublicense does not
violate any applicable customer agreements and does not alter Licensee's
covenants and obligations.
6.0 CONDITIONS PRECEDENT. The effectiveness of this Agreement is subject to
the satisfaction of the following conditions on or before February 27, 2004.
6.1 All of Licensor's representations and warranties set forth in
this Agreement and the Ancillary Agreements shall be true and correct in all
material respects as of the First Closing Date.
6.2 There shall have been no order or preliminary or permanent
injunction entered in any action or proceeding before any United States federal
or state court or any foreign court of competent jurisdiction or any
governmental authority that has jurisdiction over the enforcement of any
applicable Laws making illegal or prohibiting the consummation of the
transactions contemplated by this Agreement or the Ancillary Agreements.
6.3 No action, suit, or proceeding shall be pending before any
court or quasi-judicial court or administrative agency of any federal, state,
local or foreign jurisdiction or before any arbitrator wherein an unfavorable
injunction, judgment, order, decree, ruling, or charge would (i) legally prevent
consummation of the transactions contemplated by this Agreement or the Ancillary
Agreements, or (ii) cause the transactions contemplated by this Agreement or the
Ancillary Agreements to be rescinded following consummation.
6.4 Licensor and Licensee shall have executed and delivered to
each other a duly executed counterpart of this Agreement and each of the
Ancillary Agreements.
6.5 Licensor shall have obtained all necessary consents and
approvals required by any person to whom Licensor has contractual obligations or
to whom it is indebted for the consummation of the transactions contemplated by
this Agreement and the Ancillary Agreements and shall have provided a copy of
such consents or approvals to Licensee.
6.6 Licensee shall have received a copy of a shareholder
resolution satisfactory to Licensee evidencing that shareholder approval of this
Agreement and the Ancillary Agreements has been duly obtained.
6.7 Licensee shall have received a satisfactory certificate from a
competent officer of Licensor evidencing that the transactions as contemplated
by this Agreement and the Ancillary Agreements have been duly approved by the
Board of Directors of Licensor.
6.8 Licensor shall have performed in all material respects each
covenant and obligation of Licensor to be performed hereunder on or before the
date set by this Agreement.
6.9 Licensor shall have waived any and all non-compete,
non-solicitation and other employment-related agreements between Licensor and
any of its employees with respect to employees that Licensee desires to employ
as of the First Closing Date.
6.10 Licensor shall have obtained all necessary certificates,
consents and approvals required by any governmental authority for the
consummation of the transactions contemplated by this Agreement and the
Ancillary Agreements.
6.11 Licensor shall have delivered, performed, observed and
complied in all material respects with all of the items, instruments, documents,
covenants, agreements and conditions required by this Agreement and the
Ancillary Agreements to be delivered, performed, observed and complied with by
Licensor on or before the First Closing Date.
6.12 Licensee shall have received written confirmation satisfactory to
Licensee from Customers representing not less than 80% of budgeted revenue for
the period commencing on the First Closing Date and ending on December 31, 2004
that such Customers have approved the transition of each respective Customer's
business from Licensor's Bothell, WA facility to Licensee's Redmond, WA
facility. In no event shall such confirmation be deemed unsatisfactory to
Licensee if it is substantially in the form of confirmation prepared by Xxx
Xxxxxx.
Formal consummation of the transactions contemplated to occur as of the First
Closing Date (other than as contemplated by Section 18 below and the comparable
provisions in the Ancillary Agreements), shall constitute evidence that the
foregoing conditions precedent have been satisfied or waived, unless the Parties
otherwise agree in writing.
7.0 Representations and Warranties.
7.1 Except as set forth in Schedule 7.1 attached hereto, Licensor
represents and warrants to Licensee as of the First Closing Date that:
(i) Licensor is a corporation duly organized and validly
existing under the laws of the State of Washington
.. and has the requisite corporate power and authority
to own the Assets delineated in the Asset Purchase
Agreement and operate its business as it is now being
conducted;
(ii) The execution and delivery of, and Licensor's
performance under, this Agreement and the Ancillary
Agreements are within its powers and have been duly
authorized by all requisite corporate action;
(iii) The person(s) executing this Agreement on behalf of
Licensor are duly authorized to do so and thereby
bind Licensor hereto;
(iv) Licensor has good and marketable title to the
Inventory (as defined in the Asset Purchase
Agreement) free and clear of all liens, chattel
mortgages,
materialmen's liens and other encumbrances, other
than liens for current taxes which are not past due;
(v) Neither Licensor nor any of its officers, directors,
or to its actual knowledge its shareholders or their
affiliates have any commitment or legal obligation,
absolute or contingent, to any other person or firm
other than Licensee to sell, assign, transfer or
effect a sale of any of the Assets, other than
pursuant to Purchase Orders listed on the attached
Schedule;
(vi) Neither Licensor nor any of its officers, directors,
employees, or to its actual knowledge its
shareholders or their affiliates have employed or
made any agreement with any broker, finder or similar
agent or any person or firm (other than Lincoln
Partners who shall be paid exclusively by Licensor)
which will result in an obligation to pay any
finder's fee, brokerage fees or commission or similar
payment in connection with the transactions
contemplated hereby;
(vii) Licensor has the full, unencumbered right to grant
the License in the Licensed Property and title in the
Intangible Property (as defined in the Asset Purchase
Agreement). Licensor has not sold or granted to any
other person any license or other rights in the
Licensed Property or Intangible Property and Licensor
has no reason to believe that any other person has
any rights in or claims to the Licensed Property or
Intangible Property.
(viii) There is no default or event of default under any of
the Contracts and there has been no occurrence or
circumstance that could reasonably be expected to
have an adverse effect on the Contracts or the
economic value thereof to Buyer;
(ix) This Agreement and the Ancillary Agreements are
Licensor's valid, legal and binding obligation,
enforceable in accordance with the terms thereof and
does not conflict with or violate any law applicable
to Licensor, the violation of which would have a
material adverse effect on the Assets, the License or
Licensor's business;
(x) Licensor's performance under this Agreement will not
result in the breach of, or constitute a default
under, any agreement or other instrument to which it
is a party or by which it is bound which would result
in an adverse effect on the Assets, the License or
Licensor's business;
(xi) Neither Licensor nor any of its respective officers,
directors, or to its actual knowledge its
shareholders or affiliates have any commitment or
legal obligation, absolute or contingent, to any
other person or firm other than Licensee to sell,
assign, transfer or effect a sale of any of the
Licensed Property or Intangible Property.
7.2 Except as set forth in Schedule 7.2 attached hereto, Licensor
represents and warrants to Licensee as of the Second Closing Date that:
(i) All of the representations and warranties
made in Section 7.1 above remain true and
correct in all material respects except to
the extent that such representations and
warranties have been affected by the
consummation of the transactions
contemplated by this Agreement or the
Ancillary Agreements; and
(ii) Licensor has good and marketable title to
the Equipment free and clear of all liens,
chattel mortgages, materialmen's liens and
other encumbrances, other than liens for
current taxes which are not past due and the
rights of equipment lessors that have been
disclosed to Licensee in writing on a
schedule attached to the Asset Purchase
Agreement.
(iii) Licensor is not in default of its
obligations to Licensee under this Agreement
or the Ancillary Agreements.
The representations and warranties made by Licensor in Sections 7.1 and 7.2
herein shall continue in full force and effect until the date six (6) months
after the Second Closing Date.
7.3 Except as set forth in Schedule 7.3 attached hereto, Licensee
represents and warrants to Licensor as of the Second Closing Date that:
(i) Licensee is a corporation duly organized,
validly existing and in good standing under
the laws of the State of Delaware and has
the requisite corporate power and authority
to consummate the transactions contemplated
by this Agreement and the Ancillary
Agreements;
(ii) The execution and delivery of, and
Licensee's performance under, this Agreement
and the Ancillary Agreements are within its
powers and have been duly authorized by all
requisite entity action;
(iii) The person(s) executing this Agreement and
the Ancillary Agreements on behalf of
Licensee are duly authorized to do so and
thereby bind it hereto;
(iv) Neither Licensee nor any of its officers,
directors, employees, shareholders or
affiliates has employed or made any
agreement with any broker, finder or similar
agent or any person or firm which will
result in an obligation to pay any finder's
fee, brokerage fees or commission or similar
payment in connection with the transactions
contemplated hereby;
(v) This Agreement and the Ancillary Agreements
are Licensee's valid, legal and binding
obligation, enforceable in accordance with
the terms hereof, except as enforceability
may be limited by bankruptcy and other laws
affecting the rights and remedies of
creditors generally and general principles
of equity, and does not conflict with or
violate any law applicable to Licensee, the
violation of which would prevent the
consummation of the transactions
contemplated by this Agreement or the
Ancillary Agreements;
(vi) Licensee's performance under this Agreement
and the Ancillary Agreements will not result
in the breach of, or constitute a material
default under, any material agreement or
other instrument to which it is a party or
by which it is bound which would prevent the
consummation of the transactions
contemplated by this Agreement or the
Ancillary Agreements.
7.4 Except as set forth in Schedule 7.4 attached hereto, Licensee
represents and warrants to Licensor as of the Second Closing Date that:
(i) All of the representations and warranties
made in Section 7.3 above remain true and
correct in all material respects except to
the extent that such representations and
warranties have been affected by the
consummation of the transactions
contemplated by this Agreement or the
Ancillary Agreements; and
(ii) Licensee is not in default of its
obligations to Licensee under this Agreement
or the Ancillary Agreements.
The representations and warranties made by Licensee in Sections 7.3 and 7.4
herein shall continue in full force and effect until the date six (6) months
after the Second Closing Date.
8.0 LICENSE TERM, TERMINATION & OFFSET
8.1 The License shall be irrevocable and perpetual. Upon
Licensor's liquidation and dissolution, Licensor shall be allowed to assign the
right to receive payments under this Agreement to its creditors and such
liquidation and dissolution shall not in any way adversely affect Licensee's
payment obligations hereunder or under any Ancillary Agreement. Each such
assignment shall be subject to all of the terms, conditions, and limitations
hereof and no such assignment shall impair, modify, or limit in any respect
Licensee's right to effect setoff against the License Fee pursuant hereto or any
Ancillary Agreement. Licensor shall identify in writing to Licensee each
creditor to whom Licensee has assigned all or any portion of its rights
hereunder. There are no intended third-party beneficiaries to this Agreement.
8.2 This Agreement may be terminated by the mutual, written
consent of the Parties.
9.0 FURTHER ASSURANCES. Licensor shall, upon the request of Licensee,
promptly and duly execute and deliver any and all such further instruments and
documents and take such further action as Licensee may reasonably request to
obtain the full benefits of this Agreement and the rights and powers herein
granted.
10.0 INDEMNIFICATION.
10.1 Each Party (the "Indemnifying Party") shall indemnify and hold
the other (the "Indemnified Party") harmless for, from and against any and all
claims, liabilities, loss, expense (including reasonable attorney fees) or
damages arising out of the Indemnifying Party's breach of any of its covenants
or obligations or representations and warranties made herein or in any Ancillary
Agreement. In furtherance and not in limitation of the foregoing
indemnification, Licensor shall specifically indemnify Licensee for from and
against any loss, expense or damages suffered or incurred by Licensee:
(i) Arising out of a Purchase Order Loss.
(ii) Arising out of the revocation by a Customer that
previously approved the transition of Customer's business from
Licensor's Bothell, WA facility to Licensee's Redmond, WA
facility of such approval within 120 days after the date of
such approval, unless such revocation is primarily the result
of the failure of Licensee to provide the Customer with at
least the level of service provided by Licensor immediately
prior to the First Closing Date.
(iii) As a result of any of the Inventory acquired pursuant
to the Asset Purchase Agreement being defective or otherwise
not suitable for use in connection with the manufacture of
Products; provided, however, that Licensor's liability
therefore shall be limited to the Purchase Price attributable
to such defective or unsuitable Inventory.
(iv) For the amount, if any, that the Manufacturing Costs
paid to Company exceeds Buyer's Net Sales, in accordance with
Section 4.5.2 of the Manufacturing Services Agreement.
(v) For the amount, if any, that Licensee pays to the
lessor of Licensor's facility to cure any monetary defaults
arising under the lease for such facility, as contemplated
under that Forbearance Agreement between Benaroya Capital
Company, L.L.C., The Benaroya Company, LLC, and Licensor.
10.2 The Indemnified Party shall, with reasonable promptness,
notify the Indemnifying Party of each claim, demand, or suit for which indemnity
is sought hereunder and shall fully cooperate in the defense thereof. The
Indemnifying Party shall have the right to designate counsel to defend against
such claims and suits; however, at the Indemnified Party's option, the
Indemnified Party shall have the right to participate in the defense with its
own counsel at its own expense. In no event shall any such claims or suits
affecting the rights of either Party be settled without the prior written
consent of that Party.
10.3 The indemnification obligations herein shall be subject to the
following limitations:
(i) No claim for indemnification shall be made by an
Indemnified Party until the aggregate loss or damage to the
other Party exceeds $50,000; provided, however, that at such
time as such threshold is reached, the Indemnifying Party
shall be liable for all claims, liabilities, loss, expense and
damages (including all amounts up to such threshold); further
provided however, that such threshold shall not apply and need
not be reached as a condition of exercising setoff in
connection with any amounts for which indemnification is
sought under Section 10.1(iii), (iv), or (v) above or by
Licensor for Licensee's failure to pay sums owing pursuant to
Exhibit A attached to the Manufacturing Services Agreement.
(ii) In no event shall Licensor's aggregate
indemnification liability exceed the amount it is entitled to
receive in consideration pursuant to this Agreement.
(iii) The sole method by which Licensee shall be entitled
to seek recovery in connection with claims, liabilities, loss,
expense or damages with respect to which it is entitled to be
indemnified hereunder is to effect a dollar-for-dollar
reduction of the License Fee payable to Licensor pursuant to
and subject to the provisions of this Section 10; provided,
however, that with respect to any amounts for which
indemnification is sought under Section 10.1(v), in addition
to Licensee's right to setoff against the License Fee,
Licensee may also seek recovery by effecting a
dollar-for-dollar reduction of any amounts payable to Licensor
by Licensee on or before the Second Closing Date whether under
this Agreement or any Ancillary Agreement.
10.4 Neither Party shall be entitled to make any claim for
indemnification under this Section with respect to any covenant contained herein
unless such claim is brought within two (2) years of the date hereof; provided,
however, that nothing in this Section 10.4 shall limit or impair the exercise by
(A) Licensor of its rights under Section 17.0 or the enforcement of its rights
to receive payment under this Agreement or the Ancillary Agreements, or (B)
Licensee of its rights under Section 19.
10.5 NOTWITHSTANDING ANY OTHER PROVISION OF THIS AGREEMENT OR ANY
ANCILLARY AGREEMENT, THE FOREGOING REMEDIES ARE THE EXCLUSIVE REMEDIES UNDER
THIS AGREEMENT AND ARE MADE EXPRESSLY IN LIEU OF ALL OTHER REMEDIES EXPRESS OR
IMPLIED, EITHER IN FACT OR BY OPERATION OF LAW, STATUTORY OR OTHERWISE. NEITHER
LICENSOR NOR LICENSEE SHALL BE LIABLE FOR ANY INCIDENTAL OR CONSEQUENTIAL
DAMAGES.
11.0 Assignment.
11.1 Upon the Second Closing Date, Licensee may assign this
Agreement or any right or duty hereunder with the express prior written consent
of Licensor, which will not be
unreasonably withheld. Licensor may assign this Agreement or any right or duty
hereunder with the express prior written consent of Licensee, which will not be
unreasonably withheld.
11.2 If assigned, the rights and obligations under this Agreement
shall accrue to and be binding upon the permitted assigns or successors to this
Agreement.
11.3 All assignments by Licensor shall be subject to the provisions
of Section 8.1
12.0 Notice.
12.1 Any notice required or provided for by the terms of this
Agreement shall be in writing, and any notices, reports, and statements provided
for hereunder shall be sent by (i) personal delivery, (ii) registered or
certified mail, (iii) facsimile transmission, or (iv) commercial overnight
delivery service, to the Party to be served therewith at the address set forth
below:
If to Licensor: Xxxx Xxxxxxxx
c/o The Benaroya Company, LLC
0000 Xxxxx Xxx, Xxxxx 0000
Xxxxxxx, XX 00000
Facsimile: (000) 000-0000
With a copy to: Xxxx X. Steel
Xxxx Xxxx Xxxx & Freidenrich LLP
000 Xxxxx Xxxxxx, Xxxxx 0000
Xxxxxxx, XX 00000
Facsimile: (000) 000-0000
If to Licensee:: Three-Five Systems, Inc.
0000 Xxxxx Xxxxxx Xxxxx
Xxxxx, Xxxxxxx 00000
Attn: General Counsel
Facsimile: (000) 000-0000
A change in mailing address for the foregoing purposes may be made by either
Party by giving written notice thereof to the other Party.
12.2 Each communication given under this Section 12.0 shall be
deemed to have been given on the date of personal delivery, two (2) business
days following deposit thereof with the United States Postal Service (postage
prepaid), or one (1) business day following delivery of such communication to
the delivery service or facsimile transmission thereof.
13.0 Right To Injunction And Attorney's Fees.
13.1 Each Party agrees that any breach of this Agreement by it or
any of its employees, agents, officers or directors or any other third person
acting in concert with it or on its behalf may cause irreparable harm and result
in significant commercial damage to the other Party. It is further understood
and agreed that monetary damages would not be a sufficient remedy for any breach
of this Agreement and that, in addition to monetary damages and all other rights
and remedies available at law, the non-breaching Party shall be entitled to
equitable relief, including injunctive relief, specific performance and/or the
granting of an immediate restraining order and/or preliminary injunction
(without posting bond) enjoining any such breach or reasonably anticipated
breach as a remedy. Such equitable remedies shall not be deemed to be the
exclusive remedies for a breach of this Agreement but shall be in addition to
all other remedies available at law or equity.
13.2 If a Party prevails in any action against the other for a
breach of the terms of this Agreement, including a restraining order and/or
injunction, then, in addition to any damages that may be awarded to the
prevailing Party, it shall be entitled to recover its reasonable attorney fees
and other litigation costs from the other Party in connection with such
litigation, including any appeal therefrom.
14.0 Force Majeure.
14.1 If the performance of this Agreement, or any obligation under
this Agreement, is prevented, restricted or interfered with by reason of fire,
flood, earthquake, explosion or other casualty or accident, strikes or labor
disputes, inability to procure or obtain delivery of parts, supplies or power,
war or other violence, any law, order, proclamation, regulation, ordinance,
demand or requirement of any governmental agency, or any other act or condition
whatsoever beyond the reasonable control of the affected Party, the Party so
affected, upon giving prompt notice to the other Party, shall be excused from
such performance to the extent of such prevention, restriction or interference;
provided, however, that the Party so affected shall take all reasonable steps to
avoid or remove such cause of nonperformance and shall resume performance under
this Agreement with dispatch whenever such causes are removed.
14.2 If a Party was required to meet a scheduled date of
performance of any obligation during such period of nonperformance, then the
date for performance and the time periods specified in Sections 3.1 and 3.2
shall be extended by a period equal to the period of nonperformance.
15.0 CHOICE OF LAW AND FORUM.
15.1 This Agreement is made under, and shall be governed by and
construed in accordance with, the laws of the United States and the internal
laws of the State of Washington, without reference to its principles of
conflicts of law.
15.2 The United States District Court for the District of
Washington and the state courts of Washington located in King County shall have
exclusive jurisdiction over any dispute involving this Agreement, and both Buyer
and Seller consent to personal jurisdiction in such courts. The Parties agree
that either or both of them may file a copy of this Section with any
court of competent jurisdiction as written evidence of the knowing, voluntary
and bargained agreement between the Parties irrevocably to waive any objections
to venue or to convenience of forum.
16.0 Miscellaneous.
16.1 Entire Agreement. This Agreement and the agreements referenced
herein set forth the entire agreement and understanding of the Parties with
respect to the subject matter hereof and merges all prior discussions with
respect to same. Any modification to this Agreement and such other agreements
must be in writing and signed by a duly authorized agent of the Party to be
bound.
16.2 Independent Contractors. The Parties are independent
contractors. Each shall bear its own costs and expenses incurred in connection
with this Agreement. Neither Party has the authority to bind the other to any
third-party agreement, except as may be mutually agreed to in a separate
writing. In no event shall either Party be liable for any debts of the other
Party to its customers or its other creditors unless provided for in this
Agreement or in a separate writing.
16.3 Severance. In the event a court of competent jurisdiction
finds any provision herein illegal or unenforceable, the illegal or
unenforceable provision shall be enforced, if possible, to the greatest extent
allowed by law in accordance with the Parties' intent as reflected by this
Agreement. If said provision cannot be enforced, the remainder of the Agreement
shall be enforced to the greatest extent possible, and the offending provision
shall be treated as though not a part of this Agreement.
16.4 No Waiver Of Rights. Neither failure of either Party to give
notice of any breach or indulgence or waiver of its rights under this Agreement
shall affect its position under this Agreement or shall be construed as a waiver
of its right to give such notice for any subsequent breach. Nor shall any
failure to give notice constitute a waiver or release of any breach committed by
a Party unless such breach shall be expressly waived in writing.
16.5 Interpretation. This Agreement shall be interpreted in
accordance with its fair meaning, and no provision of this Agreement shall be
interpreted for or against either Party because that Party or that Party's
counsel drafted such provision.
16.6 Counterparts. This Agreement may be executed in any number of
counterparts and by each of the Parties hereto in separate counterparts, each of
which, when so executed and delivered, shall be an original, but all such
counterparts shall together constitute but one and the same instrument.
16.7 Attorney's Fees. In the event that any action is taken to
enforce the terms of this Agreement, the prevailing Party shall be entitled to
recover its attorney fees and costs.
17.0 AUDIT RIGHTS. During the period beginning on April 1, 2004, and ending on
March 31, 2007, (the "Audit Period"), Licensee shall maintain records to
substantiate the fees paid to Licensor pursuant to Section 3 and 4 of this
Agreement. Licensor shall have the right, exercisable at Licensor's own expense,
to audit Licensee's records relating to the License Fee paid pursuant to this
Agreement. Licensor may conduct an audit no more often than once per
calendar year. Each audit will be conducted during normal business hours by a
certified public accountant, and in such a manner as not to interfere with
normal business activities. Licensor will provide not less than ten (10) days'
prior written notice of an audit. Any underpayment or overpayment revealed by
any audit conducted pursuant to this Section 17 will be corrected by Licensee,
including payment or crediting of compensation, as applicable, within thirty
(30) days of the date of the auditor's report. If the auditor's report indicates
an underreporting of more than five (5%) percent of the total payments due
Licensor for the period audited, Licensee will pay the reasonable out-of-pocket
costs actually incurred by Licensor for conducting the audit.
18.0 PERFORMANCE BEFORE COMMENCEMENT. The Parties acknowledge and agree that
it may be mutually advantageous for each of them to agree to implement the
provisions of this Agreement and the Ancillary Agreements before or after the
date that any such agreements are executed, but prior to the First Closing Date.
In such event, the Parties agree to act in good faith to reasonably and
equitably give effect to the intended benefits of the transactions contemplated
by this Agreement and the Ancillary Agreements for such period. Furthermore, if
the Parties have implemented the provisions of this Agreement or any Ancillary
Agreement before the First Closing Date and for any reason the First Closing
Date does not occur, the Parties shall take such steps as are reasonable to
return to the status quo immediately prior to such implementation, making such
adjustments as are reasonable and fair for services performed, costs and
liabilities incurred, and materials used.
19.0 NON-COMPETITION; NON-SOLICITATION.
(a) GENERAL. In consideration of the payment of the License Fee,
Licensor hereby covenants and agrees as follows:
(i) Without the prior written consent of Licensee,
Licensor shall not prior to June 30, 2007 (A) directly or indirectly acquire or
own in any manner any interest in any person, firm, partnership, corporation,
association or other entity which engages or plans to engage in any facet of the
business of Licensor or any of its affiliates or which currently competes, plans
to compete or in the future competes in any way with Licensor or any of its
affiliates, anywhere in the Territory, or (B) use its special knowledge of the
business of Licensee and its relationships with customers, suppliers and others
to compete with Licensee or any of its affiliates.
(ii) Without the prior written consent of Licensee,
Licensor shall not prior to June 30, 2007, directly or indirectly (i) attempt to
employ or enter into any contractual arrangement with any employee or former
employee of Licensee or any of its affiliates, unless such employee or former
employee has not been employed by Licensee or any of its affiliates for a period
in excess of nine months, and/or (ii) call on or solicit any of the actual or
targeted prospective customers or clients of Licensee or any of its affiliates,
nor shall Licensor make known the names and addresses of such customers or any
information relating in any manner to Licensee's or any of its affiliates' trade
or business relationships with such customers.
(iii) Licensor shall not at any time divulge, communicate,
use to the detriment of Licensee or any of its affiliates for the benefit of any
other person or persons, or misuse in any way, any confidential information. Any
confidential information or data now known or hereafter acquired by the Licensor
with respect to Licensee or any of its affiliates and their respective
businesses shall be deemed a valuable, special and unique asset of Licensee that
is received by Licensor in confidence and as a fiduciary.
(iv) Licensor acknowledges and agrees that the covenants
provided for in this Section are reasonable and necessary in terms of time, area
and line of business to protect Licensee. Licensor acknowledges and agrees that
such covenants are reasonable and necessary in terms of time, area and line of
business to protect the legitimate business interests of Licensee which include
its interests in protecting (i) valuable confidential business information, and
(ii) substantial relationships with customers throughout the United States. To
the extent that the covenants provided for in this Section may later be deemed
by a court to be too broad to be enforced with respect to its duration or with
respect to any particular activity or geographic area, the court making such
determination shall have the power to reduce the duration or scope of the
provision, and to add or delete specific words or phrases to or from the
provision. The provision as modified shall then be enforced.
(v) Nothing in this Section, however, shall be construed
so as to prohibit the transactions and services contemplated under the
Manufacturing Services Agreement.
(b) INJUNCTION. It is recognized and hereby acknowledged by the
parties hereto that a breach or violation by Licensor of any or all of the
covenants and agreements contained in Section 19 may cause irreparable harm and
damage to Licensee or its affiliates in a monetary amount which may be virtually
impossible to ascertain. As a result, Licensor recognizes and hereby
acknowledges that Licensee and its affiliates shall be entitled to an injunction
from any court of competent jurisdiction enjoining and restraining any breach or
violation of any or all of the covenants and agreements contained in Section 19.
[Signatures On Following Page]
IN WITNESS WHEREOF, Licensor and Licensee have executed this Agreement
effective as of the Effective Date.
Licensee: LICENSOR:
Three Five Systems, Inc. INTEGREX, INC.
By: /s/Xxxxxx Xxxxxx By: /s/Xxxx Xxxxxxx
----------------------------- ------------------
Name: Xxxxxx Xxxxxx Name: Xxxx Xxxxxxx
Its: Executive Vice President Title: President and Chief Executive Officer
